Ex Parte Hay et al

Patent Trial and Appeal Board

Feb 13, 2019

14457426 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/457,426 08/12/2014 Thomas E. Hay
116 7590 02/15/2019
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
NAT-44872US1 5823
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
02/15/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. HAY and
DONALD E. KRINTZLINE 1
Appeal 2018-004676
Application 14/457 ,426
Technology Center 3700
Before MICHAEL L. HOELTER, JAMES P. CAL VE, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 16-32, which constitute all the claims
pending in this Application. App. Br. 1. We have jurisdiction under 35
U.S.C. § 6(b ). For the reasons explained below, we find error in the
Examiner's rejections of these claims.
Accordingly, we REVERSE the Examiner's rejections.
1 "The real party in interest in this matter is National Machinery LLC, the
assignee of record." App. Br. 2. We, thus, proceed on the basis that, for
purposes of this appeal, National Machinery LLC is the "Appellant."
Appeal 2018-004676
Application 14/457 ,426
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to metal cold-forming and, in
particular, machine arrangements and methods for achieving a high
reduction in area of a workpiece." Spec. ,r 1. Claims 16, 17, 23, and 30 are
independent. Claim 16 is illustrative of the claims on appeal and is
reproduced below.
16. A multi-station cold-forming machine having a die breast
and a slide reciprocal towards and away from the die breast, a
plurality of workstations, the die breast carrying dies at
respective workstations and the slide carrying tools at respective
workstations, the die and tool of at least one workstation being
arranged to perform a hydrostatic large reduction in cross-
sectional area of a workpiece utilizing hydrostatic pressure of
liquid lubricant in a closed cavity workpiece forming space
defined by the tool and die surrounding the workpiece at a plane
of separation of the tool and die when the workpiece is fully
trapped in said closed space whereby an area reduction
exceeding 55% is obtained on the workpiece determined by the
forming space of the tool and die, the die and tool of the one
workstation having mutually engageable surfaces of a size and
finish such that when engaged, during a forming stroke, provide
sufficient contact pressure and sealing to maintain such
hydrostatic pressure.
Wisebaker et al.
Hayes
REFERENCES
us 3,188,849
us 5,531,085
THE REJECTIONS ON APPEAL
June 15, 1965
July 2, 1996
Claims 21, 22, and 24--29 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2
Appeal 2018-004676
Application 14/457 ,426
Claims 16 and 30-32 are rejected under 35 U.S.C. § 102(b) as
anticipated by Wisebaker.
Claims 17-29 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wisebaker and Hayes.
ANALYSIS
The rejection of claims 21, 22, and 24-29
as being indefinite
The Examiner states, "[f]or claims 21-22 and 24-25 there is no
antecedent basis for 'said one workstation. "'2 Final Act. 2; Ans. 2.
Appellant disagrees stating, "[t]he antecedent for 'said one workstation' for
dependent claims 21 and 22 exists in parent claim 1 7, and for dependent
claims 24 and 25 exists in parent claim 23." App. Br. 9; see also Reply Br.
2. Indeed, parent claim 17 recites "a plurality of workstations" and
thereafter recites components "of one workstation." The same can be said of
parent claim 23. We, thus, are not in agreement with the Examiner that there
is a lack of antecedent basis for "said one workstation" in dependent claims
21, 22, and 24--29. We reverse the Examiner's rejection of these claims as
being indefinite due to a lack of antecedent basis.
The rejection of claims 16 and 30-32
as anticipated by Wisebaker
Because independent claims 16 and 30 differ in aspects that are
important to this analysis, we address each claim separately.
2 Claims 26-29 depend directly or indirectly from claim 24.
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Appeal 2018-004676
Application 14/457 ,426
Claim 16
Claim 16 is directed to a cold-forming machine having multiple
workstations. Claim 16 states, "at least one workstation [is] arranged to"
reduce the "cross-sectional area of a workpiece utilizing hydrostatic pressure
of liquid lubricant." This claim also recites that such hydrostatic reduction
of the workpiece occurs "in a closed cavity workpiece forming space."
The Examiner finds that Wisebaker discloses these limitations but
provides no guidance as to where such findings might be supported by
Wise baker. 3 See Final Act. 3. Appellant disagrees stating that (a) "[ t ]here is
no liquid lubricant in Wise baker" and (b) "there is no closed cavity in
Wisebaker when performing a reduction in cross-sectional area." App. Br.
9; see also Reply Br. 3. Appellant also fails to specifically identify where, in
Wisebaker, Appellant is referring to.
Our investigation ofWisebaker reveals the following passage
( occurring after a discussion of "venting passages 117," "radial slots 118,"
and "venting passages 119"):
This [ referring to the passages and slots] provides a limited
bleed of the compressed air and prevents the entrapment of
cooling and lubricating oils which might interfere with the
proper seating of the die segments.
Wise baker 6:33--40 ( emphasis added).
Based on this teaching, two matters are unclear regarding the above
claim limitations. First, it is not clear how structure specifically designed to
avoid entrapping oil can be "arranged to" generate hydrostatic pressure.
Second, in view of the passages and slots disclosed in Wise baker allowing
3 The Examiner explains, "the structure of the machine of Wise baker has all
the salient features of that of [Appellant's] invention." Ans. 12.
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Appeal 2018-004676
Application 14/457 ,426
oil to "bleed," it is not clear how this structure can also be said to be "a
closed cavity." Thus, in view of the above teachings in Wise baker, and
lacking any guidance by the Examiner to the contrary, we are not persuaded
the Examiner has established by a preponderance of the evidence that
Wisebaker anticipates claim 16. We reverse the Examiner's rejection of this
claim.
Claim 30
Claim 30 lacks the limitations discussed above regarding claim 16.
Instead, claim 30 recites "a force lever." The Examiner finds, in Wisebaker,
"a force lever operated by a spring" 73. Final Act. 4. Appellant argues,
"[t]he Examiner fails to allege any particular element of Wise baker- by
numeral or otherwise - is a lever. There is no lever in Wisebaker." App. Br.
IO; see also Reply Br. 3. Appellant further states that the term "lever," "is
used in its ordinary meaning" (App. Br. 10) and provides a definition of this
term by "The American Heritage Dictionary of the English Language (Third
Edition)" (see Evidence Appendix).
We understand from the Examiner's findings that a force lever is
operated by Wisebaker's spring 73. See Final Act. 4. Wisebaker's spring 73
is depicted in Figure 1 thereof. This depiction illustrates a spring that
applies an in-line force and the Examiner does not identify the "lever" upon
which this spring 73 operates. We, likewise, fail to identify any lever (as
this term is commonly understood) upon which spring 73 operates.
Accordingly, we are not persuaded the Examiner has established by a
preponderance of the evidence that Wisebaker anticipates claim 30. We
reverse the Examiner's rejection of claims 30-32.
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Appeal 2018-004676
Application 14/457 ,426
The rejection of claims 17-29
as unpatentable over Wisebaker and Hayes
Both independent claims 1 7 and 23 include language ( similar to claim
16 above) directed to "hydrostatic forming" in a "closed cavity." The
Examiner relies on Hayes for disclosing an oil dispenser. See Final Act. 6;
see also Hayes Title. The Examiner concludes that it would have been
obvious "to add the dispenser of Hayes to the apparatus of Wisebaker" and
provides a rationale for such combination. Final Act. 6. Appellant disagrees
for reasons already addressed ( e.g., "Wisebaker has no closed cavity").
App. Br. 14; see also id. at 11; Reply Br. 3, 4.
For the sake of argument (and for the following analysis only), we
will presume that Hayes applies oil to a workpiece. 4 Even with such
presumption, the Examiner does not make clear how Wise baker's ventilated
structure (which "prevents the entrapment" of oil), would achieve
"hydrostatic forming" of the workpiece in a "closed cavity" because
Wisebaker allows oil to "bleed" away. See supra. Accordingly, we are not
persuaded the Examiner has presented articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. We reverse the
Examiner's rejection of independent claims 17 and 23, and dependent claims
18-22 and 24--29, as being obvious over Wise baker and Hayes.
4 However, Appellant is correct that Hayes only discloses applying lubricant
"onto a die press" rather than a workpiece. App. Br. 11 (citing Hayes 2:23-
25); see also Hayes Abstract, 1:16-19. We make the above presumption for
emphasis only, with no implication whether or not Hayes actually discloses
applying lubricant to a workpiece.
6
Appeal 2018-004676
Application 14/457 ,426
DECISION
The Examiner's rejection of claims 21, 22, and 24--29 as being
indefinite is reversed.
The Examiner's art rejections of claims 16-32 are reversed.
REVERSED
7